Gottesman v. Santana et al

Filing 170

ORDER on Motions to Dismiss: 70 Motion to Dismiss for Failure to State a Claim; 72 Motion to Dismiss for Failure to State a Claim; 73 Motion to Dismiss; 75 Motion to Dismiss; 79 Motion to Dismiss Party; 116 Motion to Dismiss for Failure to State a Claim. It is ordered that the Court grants in part and denies in part the various Motions to Dismiss. Plaintiff's FAC is dismissed without prejudice unless otherwise noted. Plaintiff shall file an amended complaint, if any, on or before 21 (twenty-one) days from the date on which this Order is electronically docketed. In so amending, Plaintiff is advised to provide an amended complaint that more clearly and concisely states a claim for relief against each particular Defendant. See Fed. R. Civ. P. 8(a)(2) (requiring a pleading to contain "a short and plain statement" of the grounds for relief). Signed by Judge Janis L. Sammartino on 7/6/2017. (dxj)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 ERIC GOTTESMAN, Case No.: 16-CV-2902 JLS (JLB) Plaintiff, 12 13 14 ORDER ON MOTIONS TO DISMISS v. CARLOS SANTANA, et al., (ECF Nos. 70, 72, 73, 75, 79, 116) Defendants. 15 16 17 Presently before the Court are Motions to Dismiss and Motions to Strike filed by 18 various Defendants.1 (ECF Nos. 70, 72, 73, 75, 79, 116.) Also before the Court are Plaintiff 19 /// 20 /// 21 22 23 24 25 26 27 28 Defendants Daniel J. Schacht, Esq. (“Shacht”) and the law firm Donahue Fitzgerald LLP (“Donahue”) (collectively, the “Attorney Defendants”) bring a special motion to strike Plaintiff’s FAC under California’s anti-SLAPP law. (“anti-SLAPP MTS,” ECF No. 77). In response, Plaintiff voluntarily dismissed the Attorney Defendants. (ECF Nos. 130, 132.) However, the Attorney Defendants claim that this “type of litigation chicanery has been overwhelmingly rejected by the courts” and argue that “when a plaintiff tries to avoid an adverse ruling on an anti-SLAPP motion by dismissing the moving party, a court must rule on the merits of the anti-SLAPP motion by identifying the prevailing party, thereby allowing for the mandatory recovery of attorney’s fees.” (“anti-SLAPP MTS Reply” 2, ECF No. 153 (citing Coltrain v. Shewalter, 66 Cal. App. 4th 94, 107 (1998)).) Plaintiff also moves to strike the Attorney Defendants’ Reply suggesting that the Court must rule on the merits of the anti-SLAAP motion. (“MTS,” ECF No. 158.) Accordingly, the Court does not in this Order consider these pending Motions to Strike (ECF Nos. 77, 158). The Court will address those issues in a separate Order. 1 1 16-CV-2902 JLS (JLB) 1 Eric Gottesman’s (“GMAN”) responses in opposition to, (ECF Nos. 141, 142, 143, 144, 2 145), and Defendants’ replies in support of, (ECF Nos. 152, 154, 155), these various 3 motions. After considering the parties’ arguments and the law, the Court rules as follows. 4 BACKGROUND 5 Plaintiff is a professional artist who has extensive experience in, among other things, 6 freehand airbrush, hand-drawn and digital illustration, graphic design, and photo 7 retouching. (First Am. Compl. (“FAC”) ¶ 16, ECF No. 38.) Plaintiff has produced original 8 works of art and designs for a number of clients, including, for example, Carlos Santana, 9 the Jimi Hendrix Estate, Tom Petty and the Heartbreakers, and Metallica. (Id. ¶ 15.) This 10 case concerns Plaintiff’s work for Defendant Carlos Santana. 11 After Plaintiff spent some time working at a Fullerton-based company where he 12 created graphics for bands, celebrities, casinos, and the like, (id. ¶ 21), Santana contacted 13 and engaged Plaintiff as an independent contractor to create the art and design for 14 merchandizing in connection with an event, (id. ¶ 30). Santana was so impressed with his 15 work that he invited Plaintiff to his home and said he believed Plaintiff was the artist that 16 had the ability to “turn SANTANA into a brand.” (Id. ¶ 33.) The parties entered into a 17 business relationship where Plaintiff submitted original works to Santana and his 18 management company for use in building the Santana brand. (Id. ¶ 176.) Plaintiff retained 19 ownership in these works, but each submitted work contained limited copy and distribution 20 rights. (Id.) 21 Plaintiff filed a 103-page, 473-paragraph FAC against dozens of Defendants 22 associated with Defendant Carlos Santana. (ECF No. 38.) The gravamen of Plaintiff’s 23 claims is that these Defendants infringed his copyrights in several of his works by 24 exceeding the scope of the licenses in those works. (See generally FAC.) Thus, Plaintiff 25 brings claims for: (1) copyright infringement; (2) contributory copyright infringement; (3) 26 vicarious copyright infringement; (4) inducing copyright infringement; (5) breach of 27 contract; (6) intentional misrepresentation; (7) negligent misrepresentation; (8) breach of 28 /// 2 16-CV-2902 JLS (JLB) 1 implied covenant of good faith and fair dealing; (9) unfair business practices; and (10) 2 constructive trust. (Id.) 3 LEGAL STANDARD 4 Federal Rule of Civil Procedure 12(b)(6) permits a party to raise by motion the 5 defense that the complaint “fail[s] to state a claim upon which relief can be granted,” 6 generally referred to as a motion to dismiss. The Court evaluates whether a complaint states 7 a cognizable legal theory and sufficient facts in light of Federal Rule of Civil Procedure 8 8(a), which requires a “short and plain statement of the claim showing that the pleader is 9 entitled to relief.” Although Rule 8 “does not require ‘detailed factual allegations,’ . . . it 10 [does] 11 accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. 12 Twombly, 550 U.S. 544, 555 (2007)). In other words, “a plaintiff’s obligation to provide 13 the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than labels and conclusions, and 14 a formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. 15 at 555 (citing Papasan v. Allain, 478 U.S. 265, 286 (1986)). A complaint will not suffice 16 “if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556 U.S. 17 at 677 (citing Twombly, 550 U.S. at 557). demand more than an unadorned, the-defendant-unlawfully-harmed-me 18 In order to survive a motion to dismiss, “a complaint must contain sufficient factual 19 matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Id. (quoting 20 Twombly, 550 U.S. at 570); see also Fed. R. Civ. P. 12(b)(6). A claim is facially plausible 21 when the facts pled “allow the court to draw the reasonable inference that the defendant is 22 liable for the misconduct alleged.” Iqbal, 556 U.S. at 677 (citing Twombly, 550 U.S. at 23 556). That is not to say that the claim must be probable, but there must be “more than a 24 sheer possibility that a defendant has acted unlawfully.” Id. Facts “‘merely consistent with’ 25 a defendant’s liability” fall short of a plausible entitlement to relief. Id. (quoting Twombly, 26 550 U.S. at 557). Further, the Court need not accept as true “legal conclusions” contained 27 in the complaint. Id. This review requires context-specific analysis involving the Court’s 28 “judicial experience and common sense.” Id. at 678 (citation omitted). “[W]here the well3 16-CV-2902 JLS (JLB) 1 pleaded facts do not permit the court to infer more than the mere possibility of misconduct, 2 the complaint has alleged—but it has not ‘show[n]’—‘that the pleader is entitled to relief.’” 3 Id. 4 Where a complaint does not survive 12(b)(6) analysis, the Court will grant leave to 5 amend unless it determines that no modified contention “consistent with the challenged 6 pleading . . . [will] cure the deficiency.” DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655, 7 658 (9th Cir. 1992) (quoting Schriber Distrib. Co. v. Serv-Well Furniture Co., 806 F.2d 8 1393, 1401 (9th Cir. 1986)). 9 ANALYSIS 10 Given the variety of motions considered in this order, the Court organizes its analysis 11 by each motion. 12 I. Motion to Dismiss—Breach of Contract (ECF No. 72) 13 Defendants Linton Hall and Service First Specialty Food and Marketing, LLC move 14 to dismiss Plaintiff’s cause of action against them for breach of contract. (See generally 15 “Contract MTD,” ECF No. 72-1.) Specifically, Defendants argue that Plaintiff’s 16 allegations are insufficient to state a plausible breach of contract claim. (Id.) 17 “[T]he elements of a cause of action for breach of contract are (1) the existence of 18 the contract, (2) plaintiff’s performance or excuse for nonperformance, (3) defendant’s 19 breach, and (4) the resulting damages to the plaintiff.” Oasis W. Realty, LLC v. Goldman, 20 51 Cal. 4th 811, 821 (2011) (citing Reichert v. Gen. Ins. Co., 68 Cal. 2d 822, 830 (1968)). 21 The Court agrees with Defendants. Plaintiff’s allegations supporting its breach of 22 contract cause of action are the following: 23 24 25 26 27 429. GMAN repeats and incorporates by this reference each and every allegation set forth in paragraphs 1 through 428, inclusive. 430. GMAN entered into a verbal contract with SERVICE FIRST which required this defendant to pay GMAN for the license to limited use of the salsa labels and associated designs, time taken to create the works, time to modify 28 4 16-CV-2902 JLS (JLB) same, and time to coordinate production and printing of the labels at GMAN’s normal and customary rates. 1 2 431. HALL is personally liable for SERVICE FIRST breach of contract as the alter-ego of SERVICE FIRST for the reasons already alleged above. 3 4 432. Despite GMAN’s demands for payment, these defendants breached the parties’ contract by continuing to refuse to pay as agreed. 5 6 433. GMAN has timely and fully performed all of his obligations under the parties’ contract. 7 8 434. As a direct and proximate result of SERVICE FIRST breach of contract, GMAN has been damaged in an amount to be proven at trial. 9 10 11 (FAC ¶¶ 429–434.) 12 These allegations are insufficient to allow Defendants to appropriately respond. 13 Among other things, these allegations do not provide any specifics regarding the material 14 terms of the verbal contract between Plaintiff and Service First, much less when this 15 contract was allegedly formed and breached. Indeed, even Plaintiff admits that his 16 “allegations for this cause of action are minimal . . . .” (“Contract MTD Opp’n” 6, ECF 17 No. 145.) In short, Plaintiff has failed to allege sufficient factual matter from which this 18 Court may infer a plausible claim for the existence and breach of a contract.2 See, e.g., N. 19 Cty. Commc’ns Corp. v. Verizon Glob. Networks, Inc., 685 F. Supp. 2d 1112, 1122 (S.D. 20 Cal. 2010) (finding that the defendant did not adequately allege a breach of contract claim 21 where it failed to “plead, among other things, the nature of the contract, dates pertinent to 22 23 24 25 26 27 28 Additionally, Plaintiff argues that a “claim may be dismissed only if ‘it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief.” (Contract MTD Opp’n 4 (citing Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001) (citing Conley v. Gibson, 35 U.S. 41, 45–46 (1957))). Plaintiff also relies on this legal statement for his other responses in opposition to Defendants’ various motions. However, nearly ten years ago in the seminal case of Bell Atlantic Corp. v. Twombly, the United States Supreme Court expressly abrogated this exact aspect of the Conley standard. 550 U.S. 544, 560–62 (2007) (holding that the “no set of facts” language “has earned its retirement” and “is best forgotten as an incomplete, negative gloss on an accepted pleading standard”). Plaintiff’s reliance on Conley and its progeny is particularly strange given that he also relies on Twombly and Iqbal in his legal standard. (Contract MTD Opp’n 4.) 2 5 16-CV-2902 JLS (JLB) 1 the contract, and other relevant terms that would put [plaintiff] on notice of the basis of” 2 the claim); cf. TreeFrog Devs., Inc. v. Seidio, Inc., No. 13CV0158-IEG KSC, 2013 WL 3 4028096, at *3 (S.D. Cal. Aug. 6, 2013) (finding that a breach of contract claim was 4 adequately pleaded where the plaintiff alleged the dates and material terms of the contract, 5 including the subject of the contract and the specific payment obligations of each party); 6 Bissessur v. Ind. Univ. Bd. of Trs., 581 F.3d 599, 603 (7th Cir. 2009) (“A plaintiff may not 7 escape dismissal on a contract claim, for example, by stating that he had a contract with 8 the defendant, gave the defendant consideration, and the defendant breached the contract. 9 What was the contract? The promises made? The consideration? The nature of the 10 breach?”). 11 To be sure, Plaintiff provides additional details about this oral agreement, including 12 supporting exhibits, in the introduction portion of his opposition brief. (See Contract MTD 13 Opp’n 2–3 (describing, among other things, the dates of certain agreements, the 14 approximate hours worked in reliance on those agreements, and the alleged money owed 15 for breaching those agreements).) Such details would likely be sufficient to state a plausible 16 claim for the existence and breach of a contract, if they appeared in the FAC. Because they 17 do not, however, the Court may not consider them in assessing the adequacy of Plaintiff’s 18 allegations. See Schneider v. Cal. Dep’t of Corr., 151 F.3d 1194, 1197 n.1 (9th Cir. 1998) 19 (“In determining the propriety of a Rule 12(b)(6) dismissal, a court may not look beyond 20 the complaint to a plaintiff’s moving papers, such as a memorandum in opposition to a 21 defendant’s motion to dismiss.”) (emphasis in original)). Accordingly, the Court GRANTS 22 Defendants’ Motion to Dismiss (ECF No. 72).3 Plaintiff will have an opportunity to include 23 these additional factual allegations in his amended complaint. 24 /// 25 26 3 27 28 Plaintiff also strangely argues that his state law claims are not preempted by the Copyright Act. (See Contract MTD Opp’n 5.) But Defendants do not raise this argument in their motion. Thus, the Court does not consider these arguments in assessing the present Motion to Dismiss. 6 16-CV-2902 JLS (JLB) 1 II. Motion to Dismiss Certain Claims (ECF No. 73) 2 Various Defendants4 seek to dismiss Plaintiff’s FAC on several grounds, including: 3 (A) Plaintiff’s copyright claims seek impermissible damages; (B) Plaintiff fails to state a 4 claim for inducing copyright infringement; (C) Plaintiff’s sixth, seventh, eighth, and ninth 5 claims are preempted by the Copyright Act; (D) Plaintiff’s sixth, seventh, and ninth claims 6 grounded in fraud fail to meet the heightened pleading standard under Rule 9(b); (E) 7 Plaintiff fails to state a claim for breach of the implied covenant of good faith and fair 8 dealing; (F) Plaintiff fails to state a claim for unfair business practices; and (G) Plaintiff 9 fails to state a claim for constructive trust. (See generally “Claims MTD,” ECF No. 73-1.) 10 The Court considers each argument in turn.5 11 A. Copyright Damages 12 Defendants first argue that Plaintiff’s copyright claims are defective because they 13 seek damages that precluded as a matter of law. (Claims MTD 10.) Specifically, 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 These Defendants include Carlos Santana; Salvador Santana; Michael Vrionis; Maria Vrionis; Steven Vrionis; Daniel J. Schacht, Esq.; Donahue Fitzgerald LLP; Guts & Grace Records, Inc.; Cristalino, Inc.; Santana IV, LLC; Santana Tesoro, LLC; Universal Tone Management, LLC; Adam Fells; Constellation Brands, Inc.; Dawn DeBisschop; Howard Schomer; Hi Fidelity Entertainment, Inc.; House of Blues Entertainment, LLC; Steven Newman; The Group, Inc.; Walmart Stores, Inc.; Double O, LLC; Will Oakley; Band Tees Apparel, Inc.;; Glenn Morelli; GFM Licensing Group; Infinity 1, Inc. dba Rockabilia; Casa Noble Holdings LLC; Casa Noble Spirits, LLC; and MiJa Park. (See Claims MTD.) Defendants Linton Hall and Service First Specialty Food and Marketing, LLC also “join in the arguments set forth by Defendants Carlos Santana, et al., and seek the requested relief as to Defendants Linton Hall and Service First Specialty Food and Marketing, LLC.” (ECF No. 70.) But the underlying motion did not assess the merits of Plaintiff’s FAC with regard to these claims and these Defendants. The Court agrees with Plaintiff’s objection that this notice of joinder “fails to give the requisite notice of the basis for Moving Defendants’ request for dismissal under Rule 12(b)(6)” and that it “makes it difficult at best to respond to their position since Plaintiff’s state claim against Moving Defendants is founded upon a different set of facts and legal theories than those applicable to the” other Defendants. (ECF No. 144, at 5.) While the Court is willing to entertain some level of joinder of nonmoving Defendants in certain arguments, those motions of joinder must at the very least point the Court to those specific portions of the other motion to which the Defendants join and supply additional facts or legal theories where necessary. Otherwise the Court and Plaintiff are, as is the case here, left with a blanket joinder that provides no specific guidance. Accordingly, the Court DENIES this joinder motion (ECF No. 70). These Defendants are, of course, free to bring another motion to dismiss based on these arguments in response to Plaintiff’s amended complaint. 5 7 16-CV-2902 JLS (JLB) 1 Defendants argue that Plaintiff erroneously seeks (1) punitive damages; (2) damages based 2 on a judgment that a party “injured the business reputation and business” of a plaintiff; (3) 3 damages for unfair trade practices; and (4) both profits and statutory damages. (Id.) 4 In response, Plaintiff “does not challenge the motion to the extent it seeks to dismiss 5 Plaintiff’s claim for punitive damages under the Copyright Act, attorneys’ fees pursuant to 6 Cal. Civ. Code § 3344 for claims of copyright infringement, a declaration that defendants 7 have damaged his business reputation, or that he’s entitled to damages for unfair business 8 practices.” (“Claims MTD Opp’n” 6, ECF No. 141.) Plaintiff further argues that his 9 copyright infringement claims are otherwise adequately pled and should not be dismissed 10 on this basis, (id.), which Defendants do not appear to contest, (see Claims MTD; “Claims 11 MTD Reply,” ECF No. 154). Given Plaintiff’s concessions, the Court GRANTS 12 Defendants’ Claims MTD on these points and DISMISSES WITH PREJUDICE these 13 particular claims. Plaintiff will have an opportunity to address these deficiencies in his 14 amended complaint. 15 As to requesting both statutory damages and profits, Plaintiff argues he “is entitled 16 to recover profits from one defendant and statutory damages from another and his prayer 17 for relief can be read as requesting one or the other from each Defendant.” (Claims MTD 18 Opp’n 6.) Thus, Plaintiff appears to understand that statutory damages and actual damages 19 (including profits) are alternative damages bases under the Copyright Act. See 17 20 U.S.C. § 504(a) (noting that a copyright infringer is liable for either actual damages or 21 statutory damages). So cabined, the Court finds that Plaintiff’s FAC does not 22 impermissibly seek both statutory and actual damages against each alleged infringer. See 23 also 17 U.S.C. § 504(c)(1) (noting that a copyright owner “may elect, at any time before 24 final judgment is rendered,” to recover either actual or statutory damages). Accordingly, 25 the Court DENIES this portion of Defendants’ Claims MTD. 26 /// 27 /// 28 /// 8 16-CV-2902 JLS (JLB) 1 B. Inducing Copyright Infringement 2 Defendants argue that Plaintiff fails to state a claim for inducing copyright 3 infringement. (Claims MTD 11.) 4 Induced infringement is a species of contributory infringement since “one 5 contributorily infringes when he (1) has knowledge of another’s infringement and (2) either 6 (a) materially contributes to or (b) induces that infringement.” Perfect 10, Inc. v. Visa Int’l 7 Serv. Ass’n (“Perfect 10 I”), 494 F.3d 788, 795 (9th Cir. 2007). “The Supreme Court has 8 held that ‘one who distributes a device with the object of promoting its use to infringe 9 copyright, as shown by clear expression or other affirmative steps taken to foster 10 infringement, is liable for the resulting acts of infringement by third parties.’” Perfect 10, 11 Inc. v. Giganews, Inc. (“Perfect 10 II”), 847 F.3d 657, 672 (9th Cir. 2017) (quoting Metro- 12 Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 936–37 (2005)). In the Ninth 13 Circuit, a claim for inducement has “four elements: (1) the distribution of a device or 14 product, (2) acts of infringement, (3) an object of promoting its use to infringe copyright, 15 and (4) causation.” Id. (quoting Columbia Pictures Indust., Inc. v. Fung, 710 F.3d 1020, 16 1032 (9th Cir. 2013)). 17 The Court agrees with Defendants. Among other things, Plaintiff’s fourth cause of 18 action for inducing copyright infringement fails to identify any service, device, or product 19 that encourages another person to commit copyright infringement. (See FAC ¶¶ 420–28.) 20 Moreover, Plaintiff concedes that he “will not be pursing . . . inducement claims against 21 the defendants bringing this motion . . . .” (Claims MTD Opp’n 9.) Accordingly the Court 22 GRANTS this portion of Defendants’ Claims MTD and DISMISSES WITH 23 PREJUDICE Plaintiff’s claim for induced copyright infringement against these moving 24 Defendants. 25 C. Preemption Under the Copyright Act 26 Defendants argue that Plaintiff’s sixth through ninth claims for intentional 27 misrepresentation, negligent misrepresentation, breach of the implied covenant of good 28 faith and fair dealing, and unfair business practices are all preempted by the Copyright Act. 9 16-CV-2902 JLS (JLB) 1 (Claims MTD 11–14.) But as with his inducement cause of action, Plaintiff concedes that 2 he “will not be pursing his state court . . . claims against defendants bringing this 3 motion . . . .” (Claims MTD Opp’n 9.) Accordingly, the Court GRANTS this portion of 4 Defendants’ Claims MTD and DISMISSES WITH PREJUDICE Plaintiff’s state court 5 causes of action6 against these moving Defendants.7 6 III. Motion to Dismiss Certain Individual Defendants (ECF No. 75) 7 Defendants also move to dismiss certain individual Defendants8 because Plaintiff 8 fails to state copyright infringement claims against them. (“Indiv. Def.’s MTD,” ECF No. 9 75.) Plaintiff has since dismissed all moving Defendants except Casa Noble Spirits, LLC 10 (“Casa Noble”). (See “Indiv. Def.’s MTD Opp’n” 2, ECF No. 142.) Accordingly, the Court 11 assesses Defendants’ arguments solely with respect to Casa Noble.9 12 Defendants argue that Plaintiff fails to state a copyright infringement claim against 13 Casa Noble. (Indiv. Def.’s MTD 20–21.) “To establish a prima facie case of direct 14 infringement, a plaintiff ‘must show ownership of the allegedly infringed material’ and 15 ‘demonstrate that the alleged infringers violated at least one exclusive right granted to 16 copyright holders under 17 U.S.C. § 106.’” Perfect 10 II, 847 F.3d at 666 (quoting A&M 17 18 19 20 21 These claims include Plaintiff’s sixth claim for intentional misrepresentation, seventh claim for negligent misrepresentation, eighth claim for breach of implied covenant of good faith and fair dealing, ninth claim for unfair business practices, and tenth claim for constructive trust. 6 For this reason the Court need not reach Defendants’ additional arguments, since they all pertain to the deficiencies of Plaintiff’s state causes of actions against Defendants. (See also Claims MTD Reply 3 (noting that Plaintiff stated he will not be pursing state law claims against the moving Defendants).) 7 22 8 23 24 25 26 27 28 These moving Defendants include Maria Vrionis, Adams Fells, Steve Vrionis, MiJa Park, Will Oakley, Glen Morelli, Steven Newman, House of Blues Entertainment, LLC, and Casa Noble Spirits, LLC. (Indiv. Def.’s MTD 4.) 9 As above, supra note 5, Defendants Linton Hall and Service First Specialty Food and Marketing, LLC “join in the arguments set forth by Defendants Carlos Santana, et al., and seek the requested relief as to Defendants Linton Hall and Service First Specialty Food and Marketing, LLC.” (ECF No. 79.) But the underlying motion did not assess the merits of Plaintiff’s FAC with regard to these claims and these Defendants. And Plaintiff’s response in opposition to this motion focused on the only remaining moving Defendant—Casa Noble Spirits, LLC. Accordingly, the Court DENIES this joinder motion for the same reasons discussed above. 10 16-CV-2902 JLS (JLB) 1 Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001)). In this case the 2 exclusive rights include the right of reproduction, the right to prepare derivate works, and 3 the right of distribution. 17 U.S.C. § 106. “In addition, direct infringement requires the 4 plaintiff to show causation (also referred to as ‘volitional conduct’) by the defendant.” Id. 5 (quoting Fox Broad. Co., Inc. v. Dish Network L.L.C., 747 F.3d 1060, 1067 (9th Cir. 6 2013)). 7 The Court agrees with Defendants. The sole allegation against Casa Noble is that it 8 is listed as a registrant of the domain name and that some of Plaintiff’s 9 registered works appear on that site. (FAC 35 (providing chart noting that two of Plaintiff’s 10 registered works appear on the website).) But there are no actual allegations that satisfy the 11 causation element of direct infringement (e.g., that Casa Noble posted those works on its 12 site, created derivative versions of the copyrighted works, or offered for sale the allegedly 13 infringing merchandise). Merely alleging that an entity owns or operates a domain name is 14 not enough to plausibly demonstrate that the entity caused, for example, a copy of 15 Plaintiff’s copyrighted work to appear on its site. See, e.g., Perfect 10 II, 847 F.3d at 668 16 (“The sole evidence Perfect 10 points to in support of its argument that Giganews was not 17 merely a passive host shows only that images and thumbnails were accessed through the 18 Giganews platform. The evidence does not demonstrate that Giganews—as opposed to the 19 user who called up the images—caused the images to be displayed.”); Carell v. Shubert 20 Org., Inc., 104 F. Supp. 2d 236, 271 (S.D.N.Y. 2000) (dismissing direct copyright 21 infringement claims against certain defendants because the complaint failed to provide 22 “any description of acts that could lead to the conclusion of direct copyright” 23 infringement). 24 To be sure, Plaintiff provides additional allegations and exhibits against a group of 25 Defendants he labels “CASA NOBLE” Defendants. (FAC ¶ 113 (labeling Casa Noble 26 Holdings LLC and Casa Noble Holding, LLC as “CASA NOBLE”).) But this group does 27 not include Casa Noble Spirits, LLC. Indeed, as discussed, the only references to Casa 28 Noble Spirits, LLC are in the case caption and regarding its status as a domain name 11 16-CV-2902 JLS (JLB) 1 registrant for The Court will entertain a reasonable level of group 2 pleading in assessing the adequacy Plaintiff’s FAC, but a prerequisite to that, of course, is 3 that the group actually include the moving Defendant. And here it does not. Accordingly, 4 the Court GRANTS this portion of Defendants’ MTD and DISMISSES WITHOUT 5 PREJUDICE Plaintiff’s copyright infringement claims10 against Casa Noble Spirits, LLC. 6 IV. DPC Defendants’ Motion to Dismiss (ECF No. 116) 7 As above, supra Part II, various Defendants (hereinafter, the “DPC Defendants”11), 8 move to dismiss Plaintiff’s FAC on several grounds, including: (A) failure to state claims 9 for copyright infringement; (B) Plaintiff’s ninth cause of action is preempted by the 10 Copyright Act; and (C) Plaintiff’s tenth cause of action for constructive trust is not a cause 11 of action. (See generally “DPC MTD,” ECF No. 116-1.) However, Plaintiff concedes that 12 he “will not be pursuing [his state court claims] against the moving Defendants.”12 (“DPC 13 MTD Opp’n” 9, ECF No. 143.) Accordingly, the Court only considers the DPC 14 Defendants’ arguments regarding Plaintiff’s claims for copyright infringement.13 15 16 17 18 19 20 21 22 23 24 10 Because Plaintiff fails to state a direct infringement claim against Casa Noble Spirits, LLC, and because Plaintiff fails to allege that Casa Noble Spirits, LLC was otherwise aware of or encouraged another’s direct infringement, his secondary infringement claims against this Defendant also fail. See, e.g., Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 591 F. Supp. 2d 1098, 1104 (N.D. Cal. 2008) (“All theories of secondary liability for copyright and trademark infringement require some underlying direct infringement by a third party.” (citing Perfect 10 I, 494 F.3d at 795, 807)). 11 These moving Defendants include Dorfman-Pacific Co., Inc. (sued herein as Dorfman Pacific Co.); Shawn Daniel (sued herein as Shawn Daniel doing business as www.dorfmanpacific. com); Steven Singer (sued herein as Steven Singer doing business as Hartford York);, LLC (sued herein as, LLC doing business as; Bel-Born Management Corp. (sued herein as Bel- orn Management Corp. doing business as; Gary Monds (sued herein as Gary Monds doing business as Phoenix Leather Goods dba; and Phoenix Leather Goods LLC (sued herein as Phoenix Leather Goods doing business as (DPC MTD 7.) 25 12 26 Additionally, Plaintiff has since dismissed Defendant Shawn Daniel. (DPC MTD Opp’n 9.) 13 27 28 Also, as above, supra Part II, Defendants argue that (1) Plaintiff impermissibly seeks punitive damages under the Copyright Act, (2) Plaintiff impermissibly seeks punitive damages and fees under the California Civil Code based on copyright claims, (3) the Copyright Act does not allow a remedy for injury to business reputation, and (4) Plaintiff impermissibly seeks both profits and statutory damages under the Copyright Act. (DPC MTD 15–16.) Plaintiff does not respond to these arguments in this particular motion, but he 12 16-CV-2902 JLS (JLB) 1 2 Defendants argue that Plaintiff fails to state a claim for direct copyright infringement against each DPC Defendant. (DPC MTD 10–12.) The Court partially agrees. 3 To begin, the Court finds that Plaintiff’s charts showing (1) a domain name, (2) the 4 alleged owner/operator of that domain name, and (3) the “registrations infringed” 5 presumably on those sites are insufficient to state a claim for direct copyright infringement. 6 Specifically, as discussed above, supra Part II, this information is insufficient to plausibly 7 allege the causation element of direct infringement (i.e., that Defendant acted in some way 8 to infringe Plaintiff’s copyrighted works). Nor does Plaintiff identify any other material 9 allegations in its opposition against the majority of the DPC Defendants. (See DPC MTD 10 Opp’n 6–9 (arguing that its charts are sufficient to state a claim for direct infringement 11 against certain Defendants).) 12 But Plaintiff does provide additional allegations against Defendant Dorfman-Pacific, 13 Inc. For instance, Plaintiff alleges that Dorfman “infringed the HANDRAWN ABRAXAS 14 ANGEL by copying and/or distributing same on hat boxes containing SANTANA’s hats.” 15 (FAC ¶ 213.) Plaintiff also alleges that Dorfman “directly infringed the New Lion works 16 by making unauthorized derivative works and/or copying and distributing the originals 17 and/or derivatives via their online 2015-2017 eCatalogs, hard copies of same, and the hats, 18 boxes and merchandizing and marketing materials sold through their catalogs and the 19 above websites.” (Id. ¶ 327; see also Ex. 88 (depicting relevant pages of the Dorfman 20 eCatalogs).) This is sufficient to state a claim of direct infringement against Defendant 21 Dorfman-Pacific, Inc. Accordingly, the Court GRANTS IN PART and DENIES IN 22 PART this portion of the DPC MTD. Thus, the Court DISMISSES WITHOUT 23 PREJUDICE Plaintiff’s direct copyright infringement claims against all DPC Defendants 24 except Dorfman-Pacific, Inc. 25 /// 26 27 28 has agreed to correct these deficiencies in his amended complaint. See supra Section II.A. Accordingly, Plaintiff will have an opportunity to amend his complaint on these grounds as to the DPC Defendants consistent with his representations above and the Court’s Order. See id. 13 16-CV-2902 JLS (JLB) 1 Defendants further argue that Plaintiff fails to state a claim for secondary copyright 2 infringement against the DPC Defendants. (DPC MTD 13–14.) Plaintiff does not address 3 these arguments in his opposition to Plaintiff’s motion.14 (See generally DPC MTD Opp’n.) 4 Accordingly, the Court GRANTS this portion of the DPC MTD and DISMISSES 5 WITHOUT PREJUDICE Plaintiff’s claims for secondary copyright infringement against 6 the DPC Defendants. See, e.g., Said v. Cty. of San Diego, No. 12CV2437-GPC RBB, 2013 7 WL 2120866, at *3 (S.D. Cal. May 15, 2013) (“[S]ince Plaintiff has not addressed the 8 merits of Defendants’ argument, the court assumes that [P]laintiff concedes this point.”). 9 CONCLUSION 10 For the reasons stated above, the Court GRANTS IN PART and DENIES IN 11 PART the various Motions to Dismiss. Plaintiff’s FAC is DISMISSED WITHOUT 12 PREJUDICE unless otherwise noted. Plaintiff SHALL FILE an amended complaint, if 13 any, on or before 21 (twenty-one) days from the date on which this Order is electronically 14 docketed. In so amending, Plaintiff is advised to provide an amended complaint that more 15 clearly and concisely states a claim for relief against each particular Defendant. See Fed. 16 R. Civ. P. 8(a)(2) (requiring a pleading to contain “a short and plain statement” of the 17 grounds for relief). 18 19 IT IS SO ORDERED. Dated: July 6, 2017 20 21 22 23 24 25 26 27 28 Plaintiff, in conclusory fashion, simply states that he “sufficiently alleg[es] Defendants’ direct and secondary infringing activity.” (DPC MTD Opp’n 2 (emphasis added).) 14 14 16-CV-2902 JLS (JLB)

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